Ex Parte Meisberger et al

Patent Trial and Appeal Board

Jun 23, 2016

11919330 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111919,330 0312612009
136 7590 06/27/2016
JACOBSON HOLMAN PLLC
400 Seventh Street N.W. Suite 700
Washington, DC 20004-2218
FIRST NAMED INVENTOR
Artur Meisberger
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P72224USO 1971
EXAMINER
LEE, BRANDY SCOTT
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/27/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patent@jhip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTUR MEISBERGER and ALEXANDRA HUBER
Appeal2014-000638
Application 11/919,3301
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and
JAMES J. MAYBERRY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Artur Meis berger and Alexandra Huber (Appellants) appeal under 3 5
U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1---6 and
13-22.2 Appellants' representative presented oral argument on June 21,
2016. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
According to Appellants, the real party in interest is Fresenius
HemoCare GmbH. Appeal Br. 4 (filed Apr. 9, 2013).
2 The Examiner objects to claims 7-12, 23, and 24 as being dependent
upon a rejected base claim and otherwise indicates they are allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claim. See Final Act. 5 (mailed Aug. 13, 2012).
Claims 7-12, 23, and 24 are not part of the instant appeal.
Appeal2014-000638
Application 11/919,330
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates to "a line of a blood tubing system or of
a blood bag system having a closing member blocking the line passage."
Spec. 1.
Claims 1, 16, and 22 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A line of a blood tubing system or of a blood bag system
having a line passage, comprising a closing member formed by
a plastically deformable closing body which is arranged in the
line passage and which closes the line passage in a first state
and, when plastically deformed into a second state in which the
closing body has a deformed shape different from a shape of
said closing body in the first state, opens the line passage, said
closing body, once plastically deformed, being fixed in said
second state so that said passage remains at least partly open
thereafter and said closing body in said second state can no
longer be used to close said passage; and at least a portion of
the line in which the closing body is located being flexible.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-3, 13-16, 21, and 22 under 35
U.S.C. § 102(b) as being anticipated by Cise (US
2004/0220542 Al, pub. Nov. 4, 2004).
II. The Examiner rejected claims 4---6 and 17-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Cise.
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Appeal2014-000638
Application 11/919,330
Ill. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Cise and Lynn (US 2006/0015074 Al,
pub. Jan. 19, 2006).
ANALYSIS
Rejection I
Each of independent claims 1, 16, and 22 requires, inter alia, "a
plastically deformable closing body" that in a first state closes a line
passage, and is "plastically deformed" and "fixed" in a second state to at
least partially open the line passage. See Appeal Br. 30, 34, 35.
The Examiner finds that Cise teaches "a closing member (234, 242)
formed by a plastically deformable closing body" that in a first state has a
shape that closes line passage 230 and when plastically deformed into a
second state has a shape different from the shape in the first state, and is
"fixed in the second state so that the [line] passage remains at least partly
open." Final Act. 2 (citing Cise, paras. 15, 105; Fig. 3A).
Appellants argue that occluder 234 and wall 242 are not "plastically
deformable," as called for by each of independent claims 1, 16, and 22.
Appeal Br. 17. According to Appellants, "[t]he fact that 'the wall may not
return to its original position' does not teach or suggest that the occluder 234
or the wall 242 are plastically deformable." Id. at 21. Appellants note that
the Specification defines a ''plastically deformable closing body ... as being
a closing body that, once deformed, does not return to its original shape."
Id. at 1 7 (citing Spec. 6). Appellants further note that the phrase
"'plastically deformable' has a known meaning in the art [as] is evidenced
by the dictionary meaning of 'plastic' ... as 'capable of being deformed
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Appeal2014-000638
Application 11/919,330
continuously and permanently in any direction without rupture.'" Id. (citing
MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 890 (10th ed. 1997)).
In response, the Examiner takes the position that because wall 242 of
Cise' s occluder 234 pivots open and does not return to its original position
after the fluid pressure drops, occluder 234 and wall 242 are "plastically
deformed into a second state ... [having] a deformed shape different from
the shape ... in the first state." Ans. 7 (mailed Aug. 13, 2013); see also
Adv. Act., para. 11 (mailed Nov. 27, 2012).
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F .2d 831,
833 (Fed. Cir. 1990) (citation omitted). Here, although we agree with
Appellants' dictionary definition of the term "plastic," nonetheless,
Appellants' Specification does not limit the definition of the phrase
"plastically deformable closing body" to a "closing body that is made
plastic," as Appellants contend. See Spec. 6. "[T]he specification may
reveal a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess. In such cases, the inventor's
lexicography governs." Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed.
Cir. 2005) (en bane) (citations omitted). In this case, Appellants'
Specification sets forth an alternative definition where a "plastically
deformable closing body" is a "closing body [that] is made resilient[] and
that means are provided which fix the flexible or resilient closing body in a
deformed position." Spec. 6.
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Application 11/919,330
As such, in light of Appellants' Specification, the phrase "plastically
deformable closing body" can also be reasonably interpreted as a resilient
closing body having means to fix the closing body in a deformed position.
Accordingly, in a first instance, because Cise's wall 242 is pivotally attached
to occluder 234, pivots to open channel 238 to fluid flow, and does not
return to its original position, Cise's wall 242 and occluder 234 can
reasonably be interpreted as a resilient closing body that closes channel 238
to fluid flow in a first state and, when plastically deformed into a second
state, has a shape different from the shape in the first state to open channel
238 for fluid flow. See Cise, paras. 104--105.
However, each of independent claims 1, 16, and 22 further require
that "once plastically deformed," the closing body is "fixed" in its second
(deformed) state. See Appeal Br. 30, 34, 35. Thus, under Appellants'
alternative definition in the Specification, the phrase "plastically deformable
closing body" requires that after deformation, the resilient closing body is
fixed or held in the deformed position. See Spec. 6. Although we appreciate
that Cise's wall 242 does not return to its original position after pivoting
from occluder 234 to open channel 238 to fluid flow, this does not mean that
it is "fixed" in its deformed (second) state. See Cise, para. 105. For
example, as noted by Appellants in the schematic presented on page 24 of
the Appeal Brief, after wall 242 pivots to open channel 238 to fluid flow,
wall 242 can occupy any intermediate position between open and closed
positions, that is, positions 2 and 3, respectively. The Examiner has not
pointed to any portion of Cise that describes fixing wall 242 into a deformed
position after pivoting from occluder 234. Cise merely describes score 246
that prevents wall 242 from returning to its original position. See Cise, para.
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105. However, neither Cise nor the Examiner explains how score 246 fixes
wall 242 into a deformed position after pivoting from occluder 234.
Accordingly, the Examiner has not provided an adequate basis in fact and/or
technical reasoning that would support the Examiner's finding that after
Cise's wall 242 pivots from occluder 234, wall 242 and occluder 234 are
fixed into a deformed state, i.e., a second state.
In conclusion, for the foregoing reasons, Cise fails to teach "a
plastically deformable body," as called for by each of independent claims 1,
16, and 22. Accordingly, we do not sustain the rejection under 35 U.S.C.
§ 102(b) of claims 1-3, 13-16, 21, and 22 as being anticipated by Cise.
Rejections II and III
The Examiner's modification of Cise and use of Lynn's disclosure do
not remedy the deficiencies of Cise as described supra. See Final Act. 4--5.
Therefore, for the same reasons as discussed above, we also do not sustain
the rejections under 35 U.S.C. § 103(a) of claims 4--6 and 17-19 as
unpatentable over Cise and of claim 20 as unpatentable over Cise and Lynn.
SUMMARY
The Examiner's decision to reject claims 1-6 and 13-22 is reversed.
REVERSED
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